Federal Circuit Reminds IPR Petitioners: Get It Right in the Petition

Why It Matters

The decision reinforces strict procedural boundaries in inter partes reviews, compelling petitioners to present all invalidity arguments up front, which can reshape litigation strategy and heighten the need for thorough pre‑filing analysis.

Key Takeaways

• Federal Circuit affirmed PTAB's refusal to consider late‑filed invalidity ground
• DraftKings' attempt to add Schlottmann via reply brief footnote was rejected
• Practitioners must finalize claim charts before filing IPR petitions
• Potential rise in more comprehensive initial petitions to avoid procedural setbacks
• Board retains discretion to exclude theories not present in the original petition

Pulse Analysis

Inter partes review (IPR) has become a cornerstone of patent litigation, allowing challengers to contest the validity of a patent before the Patent Trial and Appeal Board. The process is tightly governed by procedural rules that prioritize efficiency and finality. When a petitioner files an IPR, the claim charts and accompanying prior‑art references constitute the definitive record of the challenges. Any attempt to introduce new grounds after the institution deadline is generally barred, preserving the Board’s ability to manage its docket and preventing endless reopening of cases.

The Federal Circuit’s affirmation in DK Crown Holdings Inc. v. AG 18, LLC underscores that principle. DraftKings, seeking to broaden its challenge to claim 18 by tacking on the Schlottmann reference in a reply‑brief footnote, found the Board unwilling to entertain the late theory. The appellate court agreed, noting that the Board cannot retroactively fill gaps in the petition. This outcome serves as a cautionary tale: even a seemingly minor clerical oversight can foreclose a critical argument, potentially weakening the overall invalidity case and affecting settlement leverage.

Practitioners now face a clear incentive to conduct exhaustive prior‑art searches and craft comprehensive claim charts before filing. The ruling may spur a trend toward more expansive initial petitions, as counsel aim to pre‑empt procedural dismissals. However, broader filings also raise the stakes for thoroughness, as each added ground must be substantiated with robust evidence. In a competitive patent landscape, mastering the procedural nuances of IPR petitions is as vital as the substantive legal arguments, shaping both litigation outcomes and strategic portfolio management.